Federal High Court has jurisdiction over passing off claim

Nigeria

In Omnia Nigeria Limited v Dyktrade Limited (SC 176/2003, July 13 2007), the Supreme Court has held that the Federal High Court has jurisdiction over a claim of passing off whether or not the claim arises from the infringement of a registered trademark.

It had been thought that the Supreme Court's decision in Ayman v Akuma ((2003) 13 NWLR PART 836) had settled the issue of whether the Federal High Court has jurisdiction to hear and determine a claim of passing off arising from the infringement of an unregistered trademark.

In Ayman v Akuma, the Supreme Court had ruled that the Federal High Court had no jurisdiction to hear and determine a claim based on the common law cause of action of passing off where the claim arises from the infringement of an unregistered trademark. In other words, the jurisdiction of the court arises only if the allegedly infringed trademark is duly registered.

In reaching this decision, the court considered the following provisions:

  • Section 251(1)(f) of the Constitution of Nigeria, which provides that:
    "Notwithstanding anything to the contrary contained in this constitution and in addition to such other jurisdiction as may be conferred upon it by an act of the National Assembly, the Federal High Court shall have and exercise jurisdiction to the exclusion of any other court in civil causes and matters on any federal enactment relating to copyright, patent, designs, trademarks, passing off and industrial designs."
  • Section 7 of the Federal High Court Act 1973, which is similar to the aforementioned provision.

  • Section 3 of the Trademarks Act 1965, which provides that:
    "No person shall be entitled to institute any proceeding to prevent or recover damages for infringement of an unregistered trademark, but nothing in this act shall be taken to affect the right of any person for passing off goods of another person or remedies in respect thereof."

However, in Omnia Nigeria Limited v Dyktrade Limited the Supreme Court has gone against its own ruling. In arriving at this decision, the court considered the aforementioned provisions in conjunction with the following articles:

  • Section 2 of the Federal High Court (Amendment) (60/1991), which amended Section 7 of the Federal High Court Act by providing that:
    "The court shall to the exclusion of any other court have original jurisdiction to try civil causes and matters connected with or pertaining to any federal enactment or common law relating to copyright, patents, designs, trademarks, passing off and industrial designs."
  • Section 315 of the Constitution, under which any existing law shall have the effect with such modifications as may be necessary to bring it into conformity with the provisions of the Constitution and shall be deemed to be an act or law of the National Assembly or the State Houses of Assembly, as the case may be.

Arguably, Section 2 of the Federal High Court (Amendment) Decree, which is now an act of the National Assembly under Section 315 of the Constitution, clearly vests the Federal High Court with jurisdiction to hear and determine a claim of passing off arising from the infringement of an unregistered trademark.

However, although the Supreme Court reached the same conclusion, the basis for the decision may be faulty. Even though the Supreme Court considered the Federal High Court Amendment Act, it relied on Section 3 of the Trademarks Act. The court held that, under Section 3, the common law of passing off was elevated to the status of federal enactment and, by virtue of the Constitution, the Federal High Court has jurisdiction over matters relating to any federal enactment on IP matters.

Therefore, while the conclusion of the Supreme Court in the Omnia Case was desirable, the decision is unlikely to have settled the controversy as the rationale of the decision may be incorrect. Furthermore, the facts of the Omnia Case were different from those of Ayman v Akuma: although the disputed trademark in the Omnia Case was unregistered at the time of filing of the action, the trademark had been duly registered when the Supreme Court decided the matter. In fact, this was the second factor on which the court based its decision.

Consequently, there are now two conflicting Supreme Court decisions on this issue. Under the principle of stare decisis (which was enunciated in National Electric Power Authority v Onah (1997) 1 NWLR PART 484), lower courts may choose which decision to follow. It is hoped that the court will revisit the Omnia Case and, this time, base its decision on the Federal High Court Amendment Act.

Sade Laniyan, Jackson, Etti & Edu, Lagos

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